“The last time anybody made a list of the top hundred character attributes of New Yorkers, common sense snuck in at number 79.” – Douglas Adams

“Common sense is only a modification of talent. Genius is an exaltation of it. The difference is, therefore, in degree, not nature.” — Edward G. Bulwer-Lytton

“Common sense –Sound practical judgment; that degree of intelligence and reason, as exercised upon the relations of persons and things and the ordinary affairs of life, which is possessed by the generality of mankind, and which would suffice to direct the conduct and actions of the individual in a manner to agree with the behavior of ordinary persons.” — Black’s Law Dictionary

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The Federal Circuit had an opportunity to expand upon the “common sense” issue recently in Perfect Web Technologies, Inc. v. INFOUSA, Inc. One of the issues the Federal Circuit panel (Judges Linn, Dyk, and Prost) confronted was how does one determine common sense. And, since this case was before the court on review of a summary judgment decision, is common sense a factual issue that, if disputed, is weighed in favor of the non-moving party?

The Federal Circuit looked to the parties to try to understand how common sense in the context of an obviousness determination under KSR v. Teleflex should be applied. Here are a couple of interesting sound bites from that discussion: [Listen] and [Listen].

This oral argument also discussed the “tied to a machine” aspect of the Bilski test. It was not necessary to address the 101 issues in the court’s opinion, however, because the court affirmed the district court on the obviousness issues.

The Federal Circuit has recently been issuing Rule 36 opinions with prodigious fecundity.¹ However, there is still plenty of intriguing commentary in the oral arguments underlying these terse judgments.

One interesting exchange occurred recently between Judge Moore and the associate solicitor for the PTO in the In re Rackman appeal. Judge Moore was exploring when it is acceptable for the PTO to assert that it is obvious to modify a device in a prior art reference by adding software to it if the rationale that the PTO gives is simply to increase the functionality of the device. [Listen] Judge Moore seemed concerned about the effect that this could have on the patentability of future software inventions.

¹ I’m not really well-read enough to use phrases like “prodigious fecundity;” but, I read the following Learned Hand quote today and couldn’t resist: “[A]s the law stands, the inventor must accept the position of a mythically omniscient worker in his chosen field. As the arts proliferate with prodigious fecundity, his lot is an increasingly hard one.” Merit Mfg. Co. v. Hero Mfg. Co., 185 F.2d 350, 352 (2d Cir. 1950). Which begs the question, “How would Learned Hand have decided Bilski v. Kappos?”

I am always impressed when I listen to recordings of Tom Krause arguing before the Federal Circuit on behalf of the PTO. He comes across as knowledgeable, fair, and articulate. Most importantly, it does not appear that he is trying to pursue any hidden agenda. Rather, he always seems to be trying to accurately apply existing case law to the facts at hand.

Mr. Krause recently argued the case of In re Siemens Water Technologies Holding Corp. You can listen to the entire oral argument here: [Listen]. I think this case is particularly interesting for the way that Judge Clevenger probed for an explanation of how the PTO goes about making the factual determination of combining references in a 103 rejection and whether an examiner should be entitled to such a high degree of deference in stating a prima facie case of unpatentability in matters of “common sense” and “design choice” [Listen].

Most prosecutors will get a chuckle out of this exchange about the limits on the use of “design choice” by examiners: [Listen].